WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Benda Bili v. 蔡贤坤 (Xiankun Cai)

Case No. D2021-0041

1. The Parties

The Complainant is Benda Bili, France, represented by Nameshield, France.

The Respondent is 蔡贤坤 (Xiankun Cai), China.

2. The Domain Name and Registrar

The disputed domain name <sezan.net> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On the same day, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on January 11, 2021.

On January 8, 2021, the Center also transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On January 11, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the amended Complaint, and the proceedings commenced on January 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2021. The Respondent sent an informal email communication to the Center on January 18, 2021 but did not submit a formal response. On February 4, 2021, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Matthew Kennedy as the sole panelist in this matter on March 30, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a ladies’ clothing and accessories company founded in 2013 by Morgane Sézalory. The Complainant trades as “Sézane”, which is a contraction of the founder’s surname and given name. The Complainant holds international trademark registration number 1170876 for SÉZANE, registered on June 3, 2013, designating multiple jurisdictions, including China, and specifying goods in classes 14, 18 and 25, including clothing. That trademark registration remains current. The Complainant has also registered the domain name <sezane.com> that it uses in connection with a website in French where it offers its products for sale. On November 26, 2014, the Complainant also registered the domain name <sezane.cn>, which does not resolve to any active website.

The Respondent is an individual resident in China.

The disputed domain name was registered on October 27, 2020. It resolves to a website in Chinese for Turfan Look, a company offering for sale ladies’ fleece clothing. The website also makes reference to other products.

5. Parties’ Contentions

A. Complainant

The disputed domain name is phonetically identical to the Complainant’s SÉZANE trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known as the disputed domain name. The Respondent is not affiliated with the Complainant nor authorized by it in any way to use its trademark. The Complainant does not carry out any activity for, nor has any business with, the Respondent. The Respondent uses the notoriety of the Complainant’s trademark in order to redirect consumers to its website.

The disputed domain name was registered and is being used in bad faith. Given the distinctiveness of the Complainant’s trademark and reputation, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks. The Respondent used a privacy registration service to register the disputed domain name incorporating the Complainant’s registered trademark, and is using it to promote competing products or services in a misleading manner.

B. Respondent

The Respondent advised in an informal communication that the disputed domain name was sold before this dispute and is not in the Respondent’s hands.

6. Discussion and Findings

6.1. Preliminary Issues

A. Identity of the Respondent

The named Respondent 蔡贤坤 (Xiankun Cai) denies that she is the current registrant of the disputed domain name.

Paragraph 1 of the Rules provides that the “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The Registrar, in its verification email, confirmed that the registrant of the disputed domain name was 蔡贤坤 (Xiankun Cai). The Complainant then amended the Complaint so as to pursue that person in this proceeding.

Therefore, according to paragraph 1 of the Rules, the Panel determines that the Respondent in this proceeding is 蔡贤坤 (Xiankun Cai).

B. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its arguments are that English is the most widely used language of international relations; the disputed domain name is composed of Roman characters, not Chinese script; and translation of the amended Complaint into Chinese would create an undue burden and expense for the Complainant.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint and amended Complaint in this proceeding were filed in English whereas the Respondent sent its informal communication to the Center in Chinese. Despite having received an email from the Center regarding the language of the proceeding as well as notification of the amended Complaint in both Chinese and English, the Respondent has declined to comment on the issue of language and indicated that she does not wish to participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the amended Complaint would create an undue burden and delay, whereas accepting all submissions and communications in their original language will not cause unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, but the Panel will accept the Respondent’s informal communication in Chinese without a translation.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the SÉZANE mark.

The disputed domain name incorporates the SÉZANE mark, omitting the final “e” and the accent above the first “e”. These differences are so minor that they do not prevent a finding of confusing similarity with the trademark. The disputed domain name is aurally identical, and visually almost identical, to the SÉZANE mark.

The disputed domain name also includes a generic Top-Level Domain (“gTLD”) (“.net”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances set out above, the disputed domain name resolves to a website for Turfan Look, a company offering for sale ladies’ clothing. There are scattered references to “Sezan” or “Seza” on the site, including one that refers to it as a product, without any explanation as to what that product might be. Curiously, these references are in Latin script when most of the website is in Chinese. In the Panel’s view, these references do not provide any consistent or plausible explanation for the use of the disputed domain name. The operative element of the disputed domain name is aurally identical, and visually almost identical, to the Complainant’s SÉZANE trademark. The Complainant submits that the Respondent is not affiliated with the Complainant nor authorized by it in any way to use its trademark. The Panel does not consider this to be a use of the disputed domain name in connection with a bona fide offering of goods or services for the purposes of the Policy. Nor is it a legitimate noncommercial or fair use of the disputed domain name.

The Respondent is named in the Registrar’s WhoIs database as蔡贤坤 (Xiankun Cai), not Sezan. Her company is named on its website as “吐鲁番貌条务公司”, which may be translated as “Turfan Look Company”. Although the company contact person is identified as “Ms. Seza” and the site states that “Sezan” has despatch points in cities throughout the country, “Sezan” is elsewhere identified as a recommended product. There is no other reference on the website or elsewhere on the record to the Respondent or to her company as “Sezan”. Nothing indicates that the Respondent, either as an individual or business, has been commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because she did not respond in substance to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”

The disputed domain name was registered in 2020, years after the Complainant obtained its trademark registration for SÉZANE, including in China, where the Respondent is resident. The operative element of the disputed domain name is aurally identical, and visually almost identical, to the SÉZANE mark. Neither “Sézane” nor “Sezan” is a dictionary word. The Respondent offers for sale ladies’ clothing, which is the same line of business as the Complainant. That circumstance does not seem coincidental. The scattered references to “Sezan” or “Seza” on the Respondent’s website do not provide a consistent or plausible explanation for her choice of the disputed domain name. These circumstances give the Panel reason to find it more likely than not that the Respondent targeted the Complainant’s SÉZANE trademark at the time that she registered the disputed domain name.

The Respondent uses the disputed domain name in connection with a website offering for sale ladies’ clothing. The website makes random references to other products and scattered references to “Sezan” or “Seza” that are not consistent as to whom or what that term refers to in the disputed domain name. In view of these circumstances and the findings in Section 6.2B above, the Panel considers that the disputed domain name was intended to attract Internet users by creating a likelihood of confusion with the Complainant’s SÉZANE trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products offered on that website within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sezan.net> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: April 13, 2021